| Software Modification/Licensing/Marketing Agreement |
Software Modification, Licensing, and Marketing Agreement
THIS SOFTWARE MODIFICATION, LICENSING, AND MARKETING AGREEMENT (this "Agreement"), made and entered into this day of , 20.... , by and between (hereinafter "Licensee"), a [type of corporation] with its principal offices at , and (hereinafter "Licensor"), a [type of corporation] with its principal offices at
WITNESSETH:
WHEREAS, Licensor is the author of, or has acquired the rights to, certain computer programs, documentation, and related written materials, and Licensee desires to acquire a right and license to use and market such programs and materials under the terms and conditions set forth herein; and
WHEREAS, Licensor is willing to grant such rights and licenses and is further willing to prepare modifications and additions to the existing computer programs, documentation, and related written materials on the terms and conditions set forth herein;
NOW, THEREFORE, in consideration of the mutual covenants herein contained and intending to be legally bound, the parties hereby agree as follows: Section 1
DEFINITION OF TERMS
The definition of terms set forth in this Section shall apply in this Agreement (in addition to terms elsewhere expressly defined herein) including any and all exhibits, addendums, and amendments made to or incorporated herein now or in the future.
1.1 "Code." Computer programming code, together with all Maintenance Modifications thereto, and including object code and source code as well as associated procedural code.
1.2 "Derivative Work." A work that is based upon one or more preexisting works, such as revision, modification, translation, abridgement, condensation, expansion, or any other form in which such preexisting works may be recast, transformed, or adapted and that, if prepared without authorization of the owner of the preexisting work, would constitute copyright infringement or other infringement of proprietary rights of the owner therein.
1.3 "Documentation." All textual material relating to Code, including flow charts, operating instructions, and related technical information, plus all Maintenance Modifications thereto which generally relate to the Code. Documentation shall also include customary end-user materials, such as user manuals.
1.4 "End-User License." The present standard Licensee Program License Agreement, a copy of which has been delivered to Licensor, or any revisions thereto or replacements thereof containing equivalent protection against unauthorized duplication or use, employed by Licensee to license a Product to end-users.
1.5 "Enhancements." Changes or additions (other than Maintenance Modifications), including all new releases, made by Licensor to Licensor Code that add significant new functions or substantially improved performance of Licensor Code by changes in system design or coding and related Licensor Documentation.
1.6 "Licensor Code." The existing program code specified in Exhibit A hereto [omitted]. [If licensed programs shall include object code only, appropriate identification of modules must be made in all references to Code and Documentation.]
1.7 "Licensor Documentation." All documentation and related materials customarily utilized by Licensor with Licensor Code.
1.8 "Maintenance Modifications." Modifications or revisions to Code or Documentation, other than Enhancements, including both the source code and object code thereto, which correct Program/Documentation Errors, support new releases of the operating systems with which the Code is designed to operate, support new input/output (I/O) devices, or provide other updates and corrections.
1.9 "Marketing Transferees." Any commercial entities, including dealers and distributors, to which Licensee may transfer Product in connection with the marketing and distribution thereof.
1.10 "Minor Derivative Work." A Derivative Work of the Licensor Code or a portion thereof that is based upon or incorporates less than 40 percent of the Licensor Code.
1.11 "Product" Any product offered by Licensee which includes Licensee Version, Licensor Code, Licensor Documentation, or a Derivative Work of any or all of the foregoing.
1.12 "Program/Documentation Error." Any error, problem, or defect caused by or resulting from (1) an incorrect functioning of Code or (2) an incorrect or incomplete statement or diagram in Documentation, if such error, problem, or defect renders the Code inoperable, causes the Code to fail to meet the specifications thereof, causes Documentation to be inaccurate or incomplete in any material respect, causes incorrect results, or causes incorrect functions to occur when any such materials are used for their intended purposes.
1.13 "Licensee Version." A combination of Licensor Code, Licensor Documentation, and developments undertaken pursuant to this Agreement (including Code and Documentation) to be delivered by Licensor to Licensee hereunder. Licensee Version shall be produced by Licensor to (1) conform to and implement the specifications set forth in Exhibit B hereto [omitted] with respect to Code and (2) conform to Exhibit C hereto [omitted] with respect to Documentation. Section 2
DEVELOPMENT UNDERTAKING BY LICENSOR
2.1 Modification of Licensor Code. Licensor shall modify the Licensor Code and Licensor Documentation and shall develop and incorporate the developments undertaken hereunder (including Code and Documentation) as necessary in order to create the Licensee Version The Licensee Version shall be delivered by Licensor to Licensee not later than ,19 [The Licensee Version is to be delivered in the separately deliverable module defined in the specifications at Exhibit B [omitted] in accordance with the delivery schedule set forth in Exhibit D [omitted]]. The Licensee Version shall be recorded on or embodied in [state size and specification] tapes or disk packs or such other suitable medium as shall be designated by Licensee in writing.
2.2 Joint Testing and Correction of Program/Documentation Errors. Licensor shall participate jointly with Licensee in the testing of the Licensee Version in accordance with the installation and testing procedures set forth in Exhibit D [omitted]. Licensor shall promptly correct all Program/Documentation Errors identified during such testing. Such test procedures and corrections shall be completed not later than ,19 Testing and correction of Program/Documentation Errors shall not be deemed completed until compliance of the Licensee Version with the specifications set forth at Exhibits B and C hereof [omitted] has been demonstrated in accordance with acceptance test procedures set out at Exhibit E hereof [omitted].
2.3 Preparation of Maintenance Modifications. Licensor shall provide Maintenance Modifications to Licensee for the Licensee Version for a period of years after acceptance of the Licensee Version in accordance with acceptance test procedures referred to in Section 2.2 hereof. Maintenance shall be provided by Licensor in accordance with the Maintenance Requirements set forth at Exhibit F [omitted].
Licensor during the initial __ years of this Agreement. Licensor shall keep Licensee advised as to its plans for preparation of Enhancements. Such Enhancements shall become part of the Licensor Code and Licensor Documentation. [Alternate provision]
2.4 Enhancement Options. Licensor shall, upon request by .Licensee, offer to Licensee any Enhancements prepared by Licensor. Licensor shall propose reasonable additional compensation for the Enhancements and shall keep Licensee advised as to its plans for preparation of Enhancements. If Licensee elects to obtain such Enhancements for such compensation, the parties shall modify this Agreement to reflect same. Upon such modification of this agreement, such Enhancements shall become part of the Licensor Code and Licensor Documentation.
2.5 Failure to Meet Development Requirements. The failure of Licensor to meet any of the development requirements set forth in this Section 2 shall constitute a material breach of this Agreement, and, in addition to any other contract remedies available to it, Licensee shall be entitled, at its option, to exercise the remedies provided in Section 12 hereof [or to procure, at Licensor's expense, completion of such development requirements by another organization selected by Licensee].
Section 3
RESPONSIBILITIES OF LICENSEE
3.1, Licensee Confidential Information. Licensee shall provide to Licensor as "Licensee Confidential Information" (subject to the terms of Section 13 hereof) disk packs containing certain Code and supporting Documentation developed by Licensee for use only by Licensor in the creation of the Licensee Version. A listing of such Licensee Confidential Information shall be provided to Licensor upon delivery. After delivery of the Licensee Version, Licensor shall retain copies of the Licensee Confidential Information while this Agreement is in effect, for use only in maintenance provided to or at the direction of Licensee. Licensor shall return to Licensee or destroy all copies of such Licensee Confidential Information upon termination of this Agreement. Licensee may also provide programming and documentation standards and other technical information that may relate to preparation of the Licensee Version. All such materials shall be treated as Licensee Confidential Information.
3.2 Licensee Product Decision. After receipt and testing of the Licensee Version, Licensee may elect to announce and release one or more Products. If Licensee so elects, Licensee shall proceed to print the Documentation, record the applicable Code on disk packs or other suitable medium, and market the Product under the End-User. License.
3.3 Licensee Payment for Program Preparation. Licensee shall pay Licensor for Program development work performed pursuant to this Section, as provided in Section 5.
Section 4
DISTRIBUTION AND MARKETING ARRANGEMENTS
4.1 Licensee Determination of Marketing and Pricing. Licensee shall retain full discretion with respect to all decisions relating to distribution and marketing of the Licensee Version and any Product, including, without limitation, the determination to introduce or withdraw the Product, and the terms, conditions, and pricing of the Product, provided that Licensee shall not market Products in [designate excluded territory]. Licensee shall have no obligation to promote the Product or to continue, any such promotion once commenced. [Licensee shall use its best efforts to promote the Product.] [Licensee shall use commercially reasonable efforts to promote the Product.] [It is expressly acknowledged that Licensee may elect to introduce, distribute, promote, and support a product competitive with the Licensee Version or any Product if Licensee in its discretion so elects.]
4.2 Continuing Rights of Licensor. Licensor shall retain all ownership of and full rights to continue use and marketing [in the (designate territory)] of Licensor Code and Licensor Documentation or any Enhancements thereto, provided That such Enhancements are independently developed without the use of information provided by Licensee under this Agreement.
4.3 Limitations Upon Licensor. Nothing in this Agreement shall be construed to grant Licensor any right to (1) use any Licensee trademarks or trade names or refer to Licensee in Licensor marketing activities or (2) otherwise use, copy, distribute, license, sell, donate, or transfer any Code or Documentation owned by Licensee [except as otherwise expressly provided below in this Section 4.3 with respect to a limited license-back of rights to the Licensee Version]. [Licensee hereby grants back to Licensor a non-exclusive, royalty-free license only in (reserved territory) to use, copy, distribute, license, sell, donate, and transfer the Licensee Version to end-users on terms equivalent to those contained in the End-User License.] [Insert provisions for royalties relating to grant-back licenses.]
4.4 Licensee Ownership of Licensee Version and Products. Licensee shall own and have the exclusive [worldwide] right to market the Licensee Version and Products [except as provided in Section 4.3 hereof]. [In the event, however, that Licensee appoints Marketing Transferees to market Products, Licensee shall offer to Licensor a reasonable opportunity to obtain such an appointment on terms and conditions equivalent to those offered to others.]
Section 5 COMPENSATION FOR LICENSEE VERSION ADAPTATION COSTS
5.1 Payment for Time and Materials; Incentive. In consideration of production and delivery by Licensor of the Licensee Version to Licensee in compliance with the provisions hereof, Licensee shall pay Licensor for time and materials expended by Licensor in accordance with the schedule set forth at Exhibit G [omitted] up to a maximum amount of $ Notwithstanding the expenditure of time and materials in excess of such maximum amount, Licensor shall complete and deliver the Licensee Version at no additional charge beyond said amount to Licensee. As an incentive to Licensor, if Licensor does not expend the maximum amount, Licensee shall pay Licensor one-half of the difference between the actual documented charges attributable to the Licensee Version and such maximum amount, provided, however, that in the event Licensee requests changes to the specifications of the Licensee Version that result in the requirement of additional effort to complete the Licensee Version, the parties shall negotiate an appropriate adjustment to said maximum. 5.2 Progress Review. During the term of development of the Licensee Version under this Agreement, Licensee and Licensor shall meet at least once a month at the offices of Licensor to assess progress on the Licensee Version.
Section 6 OWNERSHIP AND RIGHTS IN CODE AND DOCUMENTATION
6.1 Works Made for Hire. All copyrights in Code and Documentation in the Licensee Version shall be owned exclusively by Licensee and Code and Documentation shall be deemed works made for hire for purposes of the U.S. Copyright Act, provided that nothing herein shall be construed to assign or transfer any such rights in Licensor Code and Licensor Documentation, in which Licensor retains all right, title, and interest subject to the license hereby granted.
6.2 Assignment of Ownership. If the Licensee Version as described in Section 6.1 shall be determined not to be a work made for hire or if ownership of all right, title, and interest of copyrights therein shall not otherwise be deemed to vest exclusively in Licensee, Licensor without additional compensation shall forthwith assign to Licensee the ownership of the copyrights in the Licensee Version, together with all rights arising from such copyright ownership, and Licensee shall have the right to register in its own name such copyrights.
6.3 License of Preexisting Works. To the extent that any preexisting works are contained in the Licensee Version, Licensor grants to Licensee an irrevocable, non-exclusive, worldwide (with the exception of [insert reserved territory]), royalty-free (with the exception of royalties payable hereunder with respect to Licensor Code and Licensor Documentation) license to (1) use; maintain; execute; reproduce (in any medium including firmware); display; perform; prepare Derivative Works of; and sell, lease, or otherwise distribute or transfer copies of, such preexisting works as part of the Licensee Version or a Derivative Work thereof, and (2) authorize others to do any or all of the foregoing.
6.4 Improvements and Discoveries Arising From Licensee Version Work. Any new or improved idea, design, concept, or other invention made or developed solely by Licensor or jointly by Licensor and Licensee in the course of creation or adaptation of the Licensee Version shall be promptly disclosed to Licensee by Licensor in a complete written disclosure. Licensor assigns to Licensee all right and interest in and to any such invention, together with the right to file patent applications with respect thereto [in any country]. Licensor shall, upon the request of Licensee and at Licensee's expense, cause patent applications to be filed thereon in the manner requested by Licensee and forthwith assign such applications to Licensee, and shall cause to be executed all such other instruments and documents as Licensee may reasonably request in connection therewith.
6.5 License-Back to Licensor. To the extent Licensee has or shall acquire a right to do so, Licensee hereby grants to Licensor an irrevocable, non-exclusive, nontransferable, and fully paid-up license under any invention assigned to Licensee pursuant to Section 6.4 hereof and under any patent [throughout the world] issuing thereon.
Section 7 LICENSE
7.1 Scope of License Grant In consideration of the agreement of Licensee to pay royalties hereunder, Licensor hereby grants to Licensee the [worldwide, with the exception of the (insert reserved territory)] exclusive right and license to use; maintain; execute; reproduce (in any medium including firmware); prepare Derivative Works of; display; perform; and sell, lease, or otherwise transfer or distribute copies of, the Licensor Code and Licensor Documentation. Such license includes the right of Licensee to grant licenses of or within the scope of the right and the license granted Licensee herein, to its own subsidiaries and to Marketing Transferees, and each such sublicensee shall have the corresponding right to grant sublicenses to other Marketing Transferees.
7.2 License Rights; End-User License. Said license also includes the right of Licensee, its subsidiaries, and Marketing Transferees to demonstrate, market, sell, and transfer copies for use, subject to terms and conditions of the End-User License.
7.3 Included Patent License. Licensor further grants to Licensee and Marketing Transferees, and its and their sublicensees, the [worldwide, except for (insert reserved territory)] royalty-free, irrevocable, and non-exclusive license under any patents owned or licensed by Licensor at any time during the terms of this Agreement (1) to the extent necessary to exercise any right and license granted under this Agreement and (2) to combine the Licensor Code and/or a Derivative Work thereof with equipment.
7.4 Trademark License Grant. Licensor hereby grants Licensee and its Marketing Transferees the exclusive, fully paid-up license to use, in connection with marketing of Products, the trademarks used by Licensor to identify the Licensor Code and Licensor Documentation which are used in such Products. The foregoing grant is conditioned on compliance with Licensor's reasonable quality standards and on Licensor's right to inspect for compliance, prior to distribution, products identified with the trademark.
Section 8 ROYALTIES AND PAYMENTS
8.1 Obligation to Make Royalty Payments. In consideration of the rights in and licenses to Licensor Code and Licensor Documentation called for in or granted by this Agreement, Licensee shall make the payments required by this Section 8.
8.2 Payment for Licensee Version Costs. For costs associated with creation and adaptation of the Licensee Version, Licensee shall make the payments for time and materials referred to in Section 5.1 hereof. Payments shall be made upon submission of monthly invoices from Licensor, for percentage of work completed. [Upon completion and acceptance by Licensee of the Licensee Version, Licensee shall pay an incentive payment if earned in accordance with Section 5.1 hereof.] [Optional provision]
8.3 Payment of Annual License Fee. In consideration of the grant of the licenses and rights to Licensor Code and Licensor Documentation herein, Licensee shall pay Licensor an annual license fee in the amount of $ in equal [monthly] installments commencing on ,19 Payment of the fee is nonrefundable [and shall be credited against royalty payments provided in Section 8.4].
8.4 Continuing Royalty. With respect to all transfers for value by Licensee of Products to Marketing Transferees or to customers of any class, Licensor shall be paid a royalty determined as a percentage based upon the net revenue (after returns, allowances, delivery costs, discounts, transaction taxes and similar governmental charges) accruing to Licensee with respect to such transfers. The royalty percentage for each Product shall be percent of net revenue [attach any required exhibits]. [Notwithstanding the foregoing, Licensee shall pay Licensor a minimum royalty of $ quarterly [or, in lieu of a continuing obligation to make minimum royalty pay¬ments, Licensee may upon 90 days' written notice to Licensor, which notice shall constitute an irrevocable election of Licensee, convert the license granted in Section 7.1 hereof to a non-exclusive license].) It is understood that Licensee may license copies of Products at volume discounts, promotion or special charges, dealer discounts, special bids, and other pricing arrangements and may increase or decrease any prices, charges, or fees relating to any Product without notice to or approval of Licensor. Royalties shall accrue as revenue is received by Licensee from customers and from Marketing Transferees. Royalties accrued from each calendar quarter shall be paid to Licensor within 60 days after the last of each such quarter. [Optional provision]
8.5 Paid-Up License Option. Upon tender of payments in the amount of $ (which amount shall be inclusive of all prior continuing royalty payments), Licensee shall have and be deemed to have been granted by Licensor an irrevocable, paid-up license of all rights denominated in Section 7 hereof without the requirement of any further royalties otherwise payable hereunder.
[Optional provision] 8.6 No Royalties for Documentation or for Demonstration or Educational Use. No royalties shall be payable to Licensor for the rights and licenses granted with respect to Documentation. No royalties shall be payable to Licensor for demonstration use of Licensor Code or Products by Licensee or a Marketing Transferee or for use in educational activities. [Optional provision]
8.7 Paid-Up License for Minor Derivative Works. In the event that the total of royalties paid by Licensee to Licensor under this Agreement equals or exceeds the sum of $ , or if Licensee tenders to Licensor the difference between such royalty total and such sum, the license granted to Licensee in Section 7 hereof shall forthwith become fully paid-up and irrevocable for all existing and future Minor Derivative Works and related Documentation. Such paid-up license shall not affect any obligation of Licensee to pay royalties with respect to Products that are not Minor Derivative Works.
8.8 Royalty Base Confirmation. Licensee shall, upon written request once each calendar year, provide access to printed records with respect to applicable revenues and royalties, during normal business hours, to an independent accounting organization chosen and compensated by Licensor and approved by Licensee (which approval shall not be unreasonably withheld), for purposes of a confirming audit with respect to royalty payments. Such accounting organization shall report to Licensor only the royalties that are due.
[Optional provision] 8.9 Most Favored Licensee. If Licensee shall convert its exclusive license to a non-exclusive license pursuant to Section 8.4 hereof and Licensor shall, within three years of the date of this Agreement, sell, lease, license, or otherwise make available by affirmative act Licensor Code or Licensor Documentation, or any material part thereof, to any third party or parties to market or distribute products containing Licensor Code or Licensor Documentation under terms and conditions (including royalty provisions) more favorable than those granted to Licensee under this Agreement, then Licensor shall promptly notify Licensee thereof in writing. In such event, Licensee shall have the right within 90 days after such notification to substitute such different terms and conditions for those of this Agreement, effective as of the date of availability of such terms and conditions to such third party. Licensor shall forthwith pay over to Licensee any royalties that have been paid by Licensee from the date of such availability that are in excess of the payments required under such substituted terms and conditions if Licensee elects in writing such substitution.
8.10 Withholding of Royalties. In the event Licensor fails to perform its mainte¬nance and support obligations as set forth in Exhibit F [omitted] and does not cure such failure within working days following notice of said failure, Licensee is hereby authorized to withhold up to percent of royalties and payments otherwise due and to apply such withheld funds to the costs incurred by reason of such failure of Licensor to perform. Such withholding of payments and royalties shall not be deemed a waiver of rights of Licensee to performance or of any other remedy.
8.11 Entire Payment Obligation. The foregoing provisions of Section 8 set forth the entire obligation of Licensee for payment with respect to work performed by Licensor and rights granted by Licensor hereunder.
Section 9 COPYRIGHT NOTICES, REGISTRATION, AND ENFORCEMENT
9.1 Copyright Notices. Any publication of the Licensor Code or Licensor Documentation by either party shall contain an appropriate copyright notice in the name of Licensor. [Evaluate trade secret issues, if any.] Any publication of Derivative Works thereof made by Licensee and of the Licensee Version shall contain a copyright notice [which may be in the name of Licensee]. The contents and location of such copyright notices shall comply with instructions furnished by Licensee.
9.2 Copyright Registration. If the Licensor Code or Licensor Documentation have not been previously registered in the U.S. Copyright Office, Licensor hereby authorizes Licensee or its designee to act as Licensor's agent to so register the Licensor Code, Licensor Documentation, or any portion thereof as deemed appropriate by Licensee in the name of Licensor. Licensor shall also perform all acts necessary to enable Licensee to maintain or register such copyright, including but not limited to the execution of any necessary instruments and documents. If any Code in Licensee Version has not been previously registered in the U.S. Copyright Office, Licensor shall deliver to Licensee two copies of the Code on [state size and specification] tape or disk pack for the purpose of deposit in connection with copyright registration [evaluate trade secret impact]. in a case where such materials have been previously registered, copies of the registration certificate and the registered material shall be delivered to Licensee within 30 days after execution of this Agreement.
9.3 Enforcement of Copyright. Licensor shall [fully] [to the extent reasonable under the circumstances] enforce its rights against infringers of its copyrights .in Licensor Code and Licensor Documentation. A failure to so enforce rights against infringers of such copyrights within a reasonable period of time after appropriate notification, if such failure results in a material loss of value of the licenses granted to Licensee herein, shall relieve Licensee of its obligation to pay royalties hereunder unless and until enforcement is thereafter undertaken by Licensor and appropriate enforcement orders are obtained.
Section 10 WARRANTIES OF LICENSOR
10.1 Ownership; Right to License. Licensor represents and warrants to Licensee that Licensor is the author of the Licensor Code and Licensor Documentation and has full and exclusive right to grant all licenses and rights granted herein, that the Licensor Code and Licensor Documentation have not been published [or disclosed] under circumstances that have caused loss of copyright [or trade secret status] therein, and that the Licensor Code and Licensor Documentation do not infringe any copyright or other proprietary rights (including trade secrets) of any third party.
10.2 No infringement Claims. Licensor represents and warrants that no claim, whether or not embodied in an action past or present, or infringement of any patent, copyright, trademark, or other intellectual property right, has been made or is pending against Licensor or any entity from which Licensor has obtained such rights relative to the Code and Documentation delivered to Licensee hereunder.
10.3 Diligence; Conformity to Specifications. Licensor represents and war¬rants to Licensee that the Licensee Version delivered hereunder has been or shall be prepared by Licensor with due diligence and skill, that the Licensee Version will function on the machines and with operating systems for which it is designed, and that the Licensee Version shall conform in all material respects to the specifications and functions set forth in Exhibits B and C [omitted].
10.4 Continuing Correction. Licensor agrees that for one year from the date of delivery of the Licensee Version, Licensor will, without charge to Licensee [or its customers], employ its best efforts to provide prompt maintenance and support service in response to notification by Licensee of Program/Documentation Errors in the Licensee Version. [In the event that Licensor fails to perform such maintenance and support obligations, then, upon written notice by Licensee, Licensor shall forthwith provide Licensee all information, including source code, necessary for Licensee to perform such services. Licensor hereby agrees that such items, to the extent they contain works other than Licensee Code and Licensee Documentation, shall be deemed Licensor Code or Licensor Documentation under the terms of this Agreement, and that no further royalties shall be payable for the use or distribution of such materials or Derivative Works thereof in such maintenance and support activities.]
Section 11 INDEMNIFICATION
11.1 Infringement of Intellectual Property Rights. Licensor hereby agrees to indemnify and defend Licensee against all claims that Licensee Version infringes any patent, copyright, trademark, or trade secret rights of a third party in the
11.2 Breach of Licensor Warranties. Licensor hereby agrees to indemnify and defend Licensee and its Marketing Transferees against any claim by any customer relating, to any material breach of Licensor warranties -under Section 10 hereof, or based on material failure by Licensor to perform its maintenance and support obliga¬tions hereunder, and Licensor shall pay all costs, damages, and attorney fees arising from or in connection with any such claim [provided that no single claim under this Section 11.2 shall result in the payment by Licensor of more than $ ]
11.3 Conditions to Indemnification. The foregoing indemnities are conditioned on (1) prompt written notice of any claim or proceeding subject to indemnity; (2) reasonable cooperation by the indemnified party in the defense and settlement of such claim at the expense of the indemnifying party; and (3) prior written approval by the indemnifying party of any settlement, which approval shall not be unreasonably withheld.
Section 12
TERM AND TERMINATION
12.1 Basic Term and Renewals. This Agreement shall be effective on the date first above written and shall remain in force [until terminated as provided below] [for a period of years and shall be automatically renewed on a yearly basis, unless six months prior to any anniversary date after the the year, either party gives written notice of termination]; provided, however, that in no event shall the term of this Agreement extend beyond the expiration date of the last to expire of copyrights for the Licensor Code and Licensor Documentation.
12.2 Discretionary Termination by Licensee. Licensee, at its option, shall have the right to terminate this Agreement with respect to any license or right granted herein at any time and from time to time with respect to any of the Licensor Code and Licensor Documentation. Any such termination shall be made by written notice to Licensor and shall become effective 90 days after giving such notice.
12.3 Termination of Licensor Work on Licensee Version. Licensee may elect to have Licensor terminate work on the Licensee Version by written notice to Licensor to such effect. In the event of such election, Licensor shall cease such work and shall deliver to Licensee all work completed up to the time of termination. In such event, Licensee shall equitably compensate Licensor on a proportion-of-completion basis for work completed and delivered, but such compensation shall not exceed amounts otherwise payable under Section 5.1 of this Agreement if the work had been completed; provided, however, Licensee shall not be obligated to further compensate Licensor if Licensee represents in good faith in its notice of termination to Licensor that work on Licensee Version is being terminated due to failure of Licensor to meet the develop¬ment requirements referred to in Section 2 of this Agreement. In the event Licensee shall exercise its election to have Licensor cease such work on the Licensee Version, Licensee may proceed to engage another organization to complete such work or it may perform such work itself. In either event, the other rights and licenses granted to Licensee herein shall remain in effect.
12.4 Termination by Licensor for Breach. Licensor shall have the right to furnish notice of termination of this Agreement in the event of a material and continuing breach by Licensee of its obligations hereunder. Written notice to such effect identifying the breach upon which notice of termination is based shall be furnished to Licensee and shall become effective 90 days after delivery thereof unless Licensee shall have cured the breach during such 90-day period. Curing of such breach shall render the notice void. 12.5 Post-Termination Provisions. In the event of any termination of the entire Agreement, then (1) the provisions of Sections 5, 6, 9, and 11 shall survive as necessary to effectuate their purposes and shall bind the parties and their legal representatives, successors, and assigns; (2) licenses and sublicenses then existing by virtue of rights exercised prior to the effective date of termination under this Agreement and any royalty obligations of Licensee with respect thereto shall survive and continue; and (3) licenses and any related royalty obligations with respect to Minor Derivative Works shall survive and continue.
Section 13 CONFIDENTIAL INFORMATION
13.1 Licensee Confidential Information. "Licensee Confidential Information" shall mean, for purposes of this Section 13, the Code, Documentation, and other technical information referred to in Section 3.1 herein, and such other information marked "Confidential" and disclosed to Licensor by Licensee pursuant to this Agreement, relating to the development, marketing or promotion of Products, or otherwise respecting the performance by Licensee of obligations or the enjoyment of rights granted hereunder. Licensor shall hold all Licensee Confidential Information in confidence and shall not disclose the same, and shall not use Licensee Confidential Information other than for the benefit of Licensee during the term of this Agreement and for a period of five years after termination of this Agreement.
13.2 Terms of This Agreement. Licensor shall not, without written authorization of Licensee, disclose to any third party the terms and conditions of this Agreement except as may be necessary to establish or assert rights hereunder or as required by law; provided, however, that Licensor may, on a confidential basis, disclose this Agreement to its accountants, attorneys, and financing organizations.
Section 14 FREEDOM OF INDEPENDENT DEVELOPMENT
14.1 Nothing in this Agreement shall be construed as prohibiting or restricting either party from independently developing or acquiring and marketing materials or programs that are competitive with the Licensor Code or Licensor Documentation except as otherwise expressly provided herein.
Section 15 GENERAL
15.1 Entire Agreement. The provisions herein constitute the entire agreement between the parties with respect to the subject matter hereof and supersede all prior agreements, oral or written, and all other communications relating to the subject matter hereof. No amendment or modification of any provision of this Agreement will be effective unless set forth in a document that purports to amend this Agreement and is executed by both parties. 15.2 Assignment. Neither party shall sell, transfer, assign, or subcontract any right or obligation hereunder except as expressly provided herein without the prior written consent of the other party. Any act in derogation of the foregoing shall be null and void. [Notwithstanding the foregoing, Licensor may delegate its duty to develop the Licensee Version to a third party previously approved in writing by Licensee, provided, however, that Licensor shall remain primarily liable for the development, performance, and maintenance of the Licensee Version according to the terms of this Agreement. Any agreement between Licensor and an approved third party with respect to the Licensee Version shall make specific reference to Licensee as a third-party beneficiary of such agreement.]
15.3 Force Majeure. Neither party shall be held liable for failure to fulfill its obligations hereunder if such failure is due to a natural calamity, act of government, or similar cause beyond the control of such party. [Notwithstanding the foregoing, unless agreed to in writing by the non-defaulting party, any delay exceeding 30 days shall be grounds for issuance of notice of termination by the non-defaulting party.]
15.4 Governing Law [and Arbitration; Forum Limitation]. The validity, construction, and performance of this Agreement shall be governed by the substantive laws of [Provide for mandatory arbitration of disputes in stipulate forum and arbitral rules.]
15.5 Severability. If any provision of this Agreement is held by a court of competent jurisdiction to be contrary to law, the remaining provisions of this Agreement will remain in full force and effect.
15.6 Compliance With Laws and Regulations. Licensor and Licensee shall comply with all laws, rules, and regulations of competent public authorities relating to the duties, obligations, and performance under this Agreement and shall procure all licenses and pay all fees and other charges required thereby.
15.7 Notice of Payments. Any notice of payment required or permitted to be made or given by either party hereto pursuant to this Agreement will be deemed sufficiently made or given on the fifth day after the date of mailing if sent to such party by certified mail, postage prepaid, addressed as first set forth above or to such other address as a party shall designate by written notice given to the other party.
15.8 Rights Outside of Agreement. Nothing contained in this Agreement shall be construed as limiting rights that the parties may enjoy outside the scope of the licenses granted and the obligations and restrictions set forth or treated herein.
IN WITNESS WHEREOF, the parties have caused this Agreement to be signed below by their duly authorized representatives:
[Licensee] By: Title: Date: , 20 [Licensor] By: Title: Date: , 20 |
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